3.8.4 Correction of the withdrawal of the application under Rule 139 EPC

R. 139 EPC allows for the correction of linguistic errors, errors of transcription and mistakes in any document filed with the European Patent Office. If the request for such correction concerns the description, claims or drawings, the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction.

In J 1/11 the Legal Board noted that both the European Patent Register according to Art. 127 EPC and the European Patent Bulletin according to Art. 129(a) EPC were official sources of information to the public. There was nothing that would allow a distinction as to which of the two was more official, reliable or decisive. Contrary to what the appellant alleged, entries into the Bulletin were no more "cast in stone" than those of the Register, and could be corrected either under R. 140 EPC, or by way of a decision. As far as the function of providing information to the public was concerned, the Legal Board was unable to deduce a fundamental difference between the Register and the Bulletin. The Legal Board decided that the appellant's requests for retraction of the withdrawal of its application as a correction of an error under R. 139 EPC had to be refused. The Legal Board pointed out that explicitly withdrawing a pending patent application was a declaration of the highest importance for the applicant, since all the legal effects of the application, such as establishing a preliminary right, were finally abandoned. In the light of these consequences, utmost caution was therefore required when declaring the withdrawal of an application. A correction of errors in documents filed with the EPO under R. 139 EPC was only possible under strictly defined conditions. In the case in hand, the request for retraction of the withdrawal reached the EPO more than a month after the withdrawal was made and after it was recorded in the European Patent Register. However, a withdrawal cannot be retracted once the public has been officially informed of it. In a broader sense, this was also reflected in the principle that a declaration of intent could only be retracted if the retraction reached the addressee either before said declaration or at the same time, a rule that could be found in the civil law systems of many contracting states of the EPC. See also J 2/15.

In J 2/15 the applicant had pointed to a "fundamental inconsistency" between the decisions in cases J 10/87 and J 4/97 on the one hand, and J 25/03 and J 1/11 on the other. The Legal Board acknowledged that the reasoning of the more recent decisions had led a change in the case law due to the evolution of technical means. However, this could not be seen as an inconsistency in the case law where cases on the same subject-matter arrive at different results and have a different reasoning whilst being decided at the same time. The Legal Board was of the opinion that this inconsistency had been comprehensively addressed in J 1/11, and saw no need to elaborate on this further.

In J 19/03 the Legal Board noted that it was obvious that corrections of procedural acts having an ab initio effect had a potentially serious impact on an application, in particular if they related to its territorial extent or to whether the application was pending at all, and raised serious concerns as to legal certainty not only for the applicants vis-à-vis the EPO but also for the public. Therefore, the case law of the boards of appeal took as a starting point that, as a general rule, an applicant was bound by its procedural acts notified to the EPO provided that the procedural statement was unambiguous and unconditional (cf. J 11/87, OJ 1988, 367; J 27/94, OJ 1995, 831) and was not allowed to reverse these acts so that they could be considered as never filed (J 10/87, OJ 1989, 323; J 4/97; see also J 2/15). On the other hand, the boards of appeal considered that R. 88 EPC 1973 (R. 139 EPC) acknowledged as a further legal value the desirability of having regard to true, as opposed to ostensible, party intentions in legal proceedings (T 824/00, OJ 2004, 5) in appropriate circumstances. As a result of the conflict between these two legal principles, the case law read R. 88, first sentence, EPC 1973 as conferring a discretion on the competent instance to allow or not to allow a correction of an error since it was only stated in this rule that a respective error "may be corrected". The Legal Board decided that the notice of withdrawal did not contain a relevant error or mistake which could be corrected under R. 88, first sentence, EPC 1973. The Legal Board found that under R. 88, first sentence, EPC 1973, it was not sufficient to prove that a divergence had occurred between the true intention of the applicant and the declaration filed by its representative; rather it was additionally required that this divergence was caused by an error of the person who was competent to make the decision on the procedural act before the EPO. Therefore, as a rule, in cases where the party was represented by a professional representative the error pursuant to R. 88 EPC 1973 must be an error of the representative in expressing his own intentions.

In J 10/08 the matter to be dealt with was the request of the appellant to retract this withdrawal under R. 139 EPC because it was, according to the appellant, made erroneously. The error was not of a factual kind but of a mental one. Therefore it had to be examined whether the correction of such an error could also be subsumed under R. 139 EPC. The Legal Board noted that the boards of appeal had dealt with this question in a great number of decisions. One of those decisions on the question of a possible retraction of a procedural declaration was J 10/87 (OJ 1989, 323) with reference to earlier decisions. In this decision the Legal Board developed the preconditions under which a correction of a procedural declaration might be allowed, namely that the public had not been officially notified of the withdrawal by the EPO, that the erroneous withdrawal was due to an excusable oversight, that the requested correction would not delay the proceedings substantially and that the interests of third parties who might have taken note of the withdrawal by inspection of the file were adequately protected. The Legal Board accepted that it was not the intention of the appellant in the case in hand to withdraw the application but that this was due to a misunderstanding between the various representatives of the appellant dealing with the case. The Legal Board concluded that the public would not have been misinformed or misled by the information published in the European Patent Register (the letter containing the request for retraction of the withdrawal was received before the date on which it could be established that the public was officially informed about the withdrawal) and the withdrawal of the application could be retracted in the case in hand by correction under R. 139 EPC.

In T 1673/07 the appellant argued that it should be allowed under R. 88 EPC 1973 (corresponding to R. 139 EPC) to resile from the withdrawal of the designation of Germany and France, since it had been made under an erroneous assumption. The board, however, stated that, according to the established case law of the boards of appeal, one precondition for such a retraction was that the relevant request be made before the withdrawal has been officially notified to the public (see e.g. J 15/86, OJ 1988, 417; J 25/03, OJ 2006, 395). This was in the interests of legal certainty and balancing the interests of the applicant and of third parties, in particular in being able to rely on information officially published, and was an objective criterion which applied irrespective of the true intentions or mindset of the person who had made the relevant statement. In the case in hand the withdrawal had been published in the European Patent Bulletin about half a year before the validity of the withdrawal of the designations was contested for the first time. In conclusion, the withdrawal of the designation was valid and could not be retracted.

In J 6/19 the Legal Board noted that the request for withdrawal, which the applicant had sought to retract, was unqualified, unambiguous and unconditional, and therefore valid. The Legal Board applied the reasoning of J 25/03, where four days elapsed from the mention of the withdrawal in the European Patent Register to the addition to the file of the request for retraction of the withdrawal (see IV.B.3.8.3 in this Chapter). The Legal Board concluded that it was therefore of no relevance to the case in hand that the request for retraction was received on the same day the withdrawal was published. The time requirement of R. 139 EPC had not been met.

In J 7/19 the board concluded, with reference the case law of the boards of appeal (J 8/80, OJ 1980, 293; J 4/82, OJ 1982, 385) to R. 139 EPC, that mistakes which resulted in a divergence between the party's actual and declared intent were eligible for correction under R. 139 EPC. In the case in hand the applicant decided to abandon the application on the basis of an erroneous assumption. The board found there to be no divergence between the applicant's declaration and its true intention and dismissed the appeal. In the case law of the boards, only errors relating to the declaration, its content or its transmission fell under the notion of a mistake within the meaning of R. 139 EPC. The board explained there were good policy reasons for having this limitation. If the notion of a mistake were extended to also cover a scenario where the declaration correctly reflected a party's intentions, but was based on wrong assumptions, any mistaken assessment of the disclosure of the application, the patentability of the invention, the entitlement to priority, the legal provisions or the related case law would make any withdrawal potentially eligible for correction. This would be detrimental to legal certainty. Where the applicant has made a decision on withdrawal without considering all the relevant circumstances, it must bear the consequences.